We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

9th Circuit: this case is “why fair use exists”

Finding that a seven-second clip of The Ed Sullivan Show played during the Jersey Boys musical “a good example of why fair use exists,” the U.S. Court of Appeals for the Ninth Circuit dismissed a copyright infringement suit brought by SOFA Entertainment, which owns the rights to the television program.

The company sued Dodger Productions, the group behind the hit Broadway musical Jersey Boys, a historical dramatization about the Four Seasons and its members. The clip at issue is played at the end of the first act. One of the actors stands to the side of the stage and describes how the Four Seasons battled the “British invasion” on the airwaves before the clip plays on a screen hanging over the center stage. As Sullivan introduces the band on the Jan. 2, 1966, episode, the clip ends and the musical’s actors then perform a song.

Dodger claimed the clip constituted fair use under 17 U.S.C. §107 of the Copyright Act.

The 9th Circuit agreed, emphasizing that the clip was used as a “biographical anchor” in the musical and not for its own entertainment value, as SOFA alleged. Because the use of the clip is transformative, the fact that the musical is a commercial production “is of little significance,” the court added.

“By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip,” Judge Stephen S. Trott wrote for the panel. Further, the “clip conveys mainly factual information – who was about to perform.”

The court also disagreed with SOFA’s argument that the clip capitalized on Sullivan’s “distinctive style” of introducing guests. “Certainly movement and intonation are elements in an original performance, but SOFA’s argument is not limited to Sullivan’s performance in the clip,” Judge Trott wrote. “It is Sullivan’s charismatic personality that SOFA seeks to protect. Charisma, however, is not copyrightable.”

Finally, the court analyzed the market effect of the musical’s use of the clip and determined that Jersey Boys is not a substitute for The Ed Sullivan Show. “Dodger’s use of the clip advances its own original creation without any reasonable threat to SOFA’s business model,” the court said. “This case is a good example of why the ‘fair use’ doctrine exists.”

The 9th Circuit also affirmed an award of $155,000 in attorneys’ fees and costs for Dodger.

Why it matters: After weighing the four factors to be considered pursuant to §107 of the Copyright Act – the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the market effect – the court found they balanced heavily in favor of Dodger. When examining the issue of market effect, however, the court did note that while the clip is only seven seconds long and appears just once in the play, a reproduction of Jersey Boys – on videotape or DVD – would allow for repeated viewing of the clip. Since Dodger does not currently reproduce the musical in such a format, that issue was not before the court and it declined to decide whether or how that would affect the balance of the factors.